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PATENT LAW OF GEORGIA

CHAPTER I

GENERAL PROVISIONS

ARTICLE 1. Scope of Regulation (4.05.2010. N3031 shall enter into force

after a month from its publication, (24.05.2010 N27))

This law regulates relations in connection with the creation, use and legal

protection of inventions and utility models.

ARTICLE 2. Use of Terms (4.05.2010. N3031 shall enter into force after a

month from its publication, (24.05.2010 N27))

1. Terms used in this law shall have following meaning:

a) legal entity of public law - National Intellectual Property Center of Georgia

"Sakpatenti” – an independent agency operating in the field of intellectual property

protection (hereinafter -Sakpatenti); (4.05.2010. N3031 shall enter into force after

a month from its publication, (24.05.2010 N27))

b) International Bureau - International Bureau of the World Intellectual Property

Organization;

c) Paris Convention - the Paris Convention for the Protection of Industrial

Property, signed in Paris on March 20, 1883, as revised and amended in Stockholm

on July 14, 1967 and on September 28,1979;

d) Patent Cooperation Treaty (PCT) - multilateral international treaty, signed on

June 19, 1970, revised on September 28, 1979, amended on February 3, 1984;

e) Repealed (4.05.2010. N3031 shall enter into force after a month from its

publication, (24.05.2010 N27))

e1) Inventor – an individual who has created an invention by creative intellectual

effort. (4.05.2010. N3031 shall enter into force after a month from its publication,

(24.05.2010 N27))

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f) Patent - a document issued in the name of the patent owner in accordance with

this law, confirming exclusive rights of the patent owner for the moment of its

issuance; (4.05.2010. N3031 shall enter into force after a month from its


g) Repealed (4.05.2010. N3031 shall enter into force after a month from its


h) Applicant – an individual or legal entity applying for a patent; (4.05.2010.

N3031 shall enter into force after a month from its publication, (24.05.2010 N27))

i) Application - collection of documents necessary for grant of a patent under this

law; (4.05.2010. N3031 shall enter into force after a month from its publication,

(24.05.2010 N27))

j) International application – an application drafted and filed under the Patent

Cooperation Treaty;

k) repealed; (4.05.2010. N3031 shall enter into force after a month from its


l) Priority - privilege enjoyed by an application filed earlier, in respect to the later

application; (4.05.2010. N3031 shall enter into force after a month from its


m) Convention priority - priority established under Article 4 of Paris Convention

entitling the applicant to exercise such priority in member state to the Paris

Convention or the World Trade Organization; (4.05.2010. N3031 shall enter into

force after a month from its publication, (24.05.2010 N27))

n) Exhibition priority - priority established under Article 11 of Paris Convention

entitling the applicant to exercise such priority in member state to the Paris

Convention or the World Trade Organization; (4.05.2010. N3031 shall enter into


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o) repealed; (4.05.2010. N3031 shall enter into force after a month from its


p) Depository – an authorized organization that stores biologically reproducible

material.

r) Medical product - for the purposes of this law, active substance or combination

of active substances intended for human or animal treatment or prevention of

disease, as well as substance or combination of substances that could be prescribed

to human or animal for medical diagnosis and recovery, correction or modification

of physiological function. (4.05.2010. N3031 shall enter into force after a month

from its publication, (24.05.2010 N27))

ARTICLE 3. Repealed (4.05.2010. N3031 shall enter into force after a month




ARTICLE 5. Validity of Patent for an Invention (4.05.2010. N3031 shall enter

into force after a month from its publication, (24.05.2010 N27))

1. Term for patent protection of an invention is 20 years from the date of

submitting application to Sakpatenti. (4.05.2010. N3031 shall enter into force after


2. Repealed; (4.05.2010. N3031 shall enter into force after a month from its






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5. Patent validity of an invention related to medical product, which requires

consent of competent authority for entry into the Georgian market, can be extended

by request of the patent owner for additional term which corresponds to the period

from the date of application to Sakpatenti until receiving consent from the

competent authority, but no longer than 5 years. Application requesting additional

term for patent validity shall be submitted by patent owner within a year from the

date of obtaining consent of the competent authority. (4.05.2010. N3031 shall enter


ARTICLE 6. Scope of Protection (4.05.2010. N3031 shall enter into force after a


1. The scope of legal protection of an invention is determined by claims,

(4.05.2010. N3031 shall enter into force after a month from its publication,

(24.05.2010 N27))

2. Repealed - (4.05.2010. N3031 shall enter into force after a month from its


3. Repealed- (4.05.2010. N3031 shall enter into force after a month from its


ARTICLE 7. Confidentiality of an Invention (4.05.2010. N3031 shall enter into


1. Sakpatenti grants patent in respect of an invention that is rendered confidential

by competent authority for purposes of state defense only after such authority

decides on declassification of an invention. (4.05.2010. N3031 shall enter into

force after a month from its publication)

2. An invention can be kept secret for no longer than 2 years, which can be

extended multiple times during validity of patent by term(s) determined by this

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paragraph. (4.05.2010. N3031 shall enter into force after a month from its



publication)

4. In case of rendering an invention secret, appropriate compensation is paid to the

inventor in the amount and through the procedures determined by normative act of

a competent authority. (4.05.2010. N3031 shall enter into force after a month from

its publication, (24.05.2010 N27))

CHAPTER II. SAKPATENTI

ARTICLE 8. “Sakpatenti” (4.05.2010. N3031 shall enter into force after a month


1. Functions and competences of Sakpatenti are defined by its Statute, approved by

the Government of Georgia.

2. Sakpatenti is headed by a Chairman, who is appointed and dismissed by the

President of Georgia by the nomination of the Prime Minister.

3. The Chairman of Sakpatenti is appointed for a term of 4 years.

4. Article 11 of the Law of Georgia on "Legal Entity of Public Law” does not

apply to Sakpatenti.

5. Sakpatenti is accountable before the Prime Minister of Georgia.

Article 81. Authority to issue by-laws (26.10.2010 №3741)

1. Chairman of SAKPATENTI under his competence is empowered to issue by-

laws.

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2. By-law of Chairman of SAKPATENTI is an order of Chairman.

3. Chairman of SAKPATENTI issues by-laws according to “Georgian law on by-

laws”.

ARTICLE 9. Chamber of Appeals (4.05.2010. N3031 shall enter into force after


1. The Chamber of Appeals is established at Sakpatenti for settlement of disputes

arising from decisions of Sakpatenti on objects of intellectual property, as well as

disputes related to criteria of their protection, grant of a patent, and registration of

industrial property and other objects.

2. Functions and competences of the Chamber of Appeals are defined under its

Statute, approved by the Chairman of Sakpatenti.



ARTICLE 11. Budget of Sakpatent (4.05.2010.N3031 shall enter into force


1. Sakpatenti is funded by:

a) income from services related to main activities of Sakpatenti;

b) income from performing work on the basis of a contract;

c) other income permitted by law of Georgia, including income from the State

Budget of Georgia.

2. Fees for services noted under par. 1(a) of this Article are approved by the

Government of Georgia.

3. Fees and other income are paid to the account of Sakpatenti, managed

exclusively by Sakpatenti.

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Unspent funds from the current year shall be deferred to the budget of the

following year.

4. Before 1 December of every year, Sakpatenti prepares the budget for the next

year, defining total expenses of Sakpatenti and sources for their payment.

5. In extraordinary cases, funds unspent by Sakpatenti during the year may be

transferred to the state budget upon instruction of the Prime Minister of Georgia.

6. The budget of Sakpatenti is approved by the Sakpatenti Chairman, in agreement

with the Prime Minister of Georgia.

7. Sakpatenti has the right to acquire and dispose of property independently, except

for the real estate. Sakpatenti purchases and disposes of real estate in agreement

with the Prime Minister of Georgia.

CHAPTER III. PATENTABILITY

ARTICLE 12. Criteria of Patentability of an Invention (4.05.2010. N3031 shall

enter into force after a month from its publication, (24.05.2010 N27))

1. An invention is patentable where it satisfies the criteria of patentability -

novelty, inventive step and industrial applicability. (4.05.2010. N3031 shall enter


2. An invention is novelty if it does not relate to the existing state of the art.


(24.05.2010 N27))

3. An invention involves the inventive step where, for the date of establishing

priority, it is not known at current state of the art. (4.05.2010. N3031 shall enter

into force after a month from its publication, (24.05.2010 N27) (2.07.2010 №

3278)

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4 An invention is industrially applicable where it implies the capability of its

production or use in industry or agriculture. (4.05.2010. N3031 shall enter into


5. Existing state of the art is defined by all data that, before the date of establishing

priority, has become publicly accessible in writing, by verbal description, public

use or from other source. (4.05.2010. N3031 shall enter into force after a month

from its publication, (24.05.2010 N27) (2.07.2010 № 3278)

6. In the course of determining novelty, the state of the art, in addition criteria

defined in par. 5 of this Article, includes all applications for invention and utility

model filed with Sakpatenti, provided that these have an earlier priority compared

to an application whose novelty is being determined and such applications were

published after establishing priority date of the application. (4.05.2010. N3031

shall enter into force after a month from its publication, (24.05.2010 N27)

(2.07.2010 № 3278)

7. In the course of determination of an inventive step, the state of the art does not

include non-public data indicated in applications on invention and utility model

filed with Sakpatenti. (4.05.2010. N3031 shall enter into force after a month from


8. Repealed (4.05.2010. N3031 shall enter into force after a month from its






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ARTICLE 15. Disclosure of Information (4.05.2010. N3031 shall enter into


Data related to the inventive step shall not have an influence on patentability of the

object of application where, before the date of filing an application or within 12

months before establishing the date of priority, such data became publicly

accessible: (2.07.2010 N 3278)

a) by action of an inventor or his/her successor;

b) if information for the third party is disclosed, directly or indirectly, on the

condition of confidentiality;

c) as a result of third person’s action in bad faith against the inventor or his/her

successor.

ARTICLE 16. Objects that cannot be regarded as an Invention (4.05.2010.

N3031 shall enter into force after a month from its publication, (24.05.2010

N27))

1. The following shall not be regarded as an invention:

a) discovery, scientific theory, or mathematical method;

b) artistic creation;

c) algorithm, computer program;

d) educational or teaching method and system, language grammar system, methods

for performance of mental acts, rules for games or gambling;

e) methods of business and organizational management;

f) plans and schemes of structures, buildings or territories;

g) presentation of information.

2. Objects under paragraph 1 of this Article shall not be considered patentable only

where these are an immediate object of application.

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ARTICLE 17. Objects that cannot be granted a Patent (4.05.2010. N3031 shall


A patent is not granted for:

a) Inventions against public order; (4.05.2010. N3031 shall enter into force after a


b) Inventions related to surgical, therapeutic and diagnostic methods of treatment

of humans and animals. This rule does not apply to devices and substances used in

such methods; (4.05.2010. N3031 shall enter into force after a month from its


c) Inventions related to plant varieties and breeds of animals, as well as primarily

biological methods for plant and animal breed selection. This rule does not apply

to micro-biological methods and products obtained through such methods.


(24.05.2010 N27))

d) Repealed (4.05.2010. N3031 shall enter into force after a month from its


e) Repealed (4.05.2010. N3031 shall enter into force after a month from its


CHAPTER IV. INVENTOR AND PATENT OWNER


(24.05.2010 N27))

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ARTICLE 18. Inventor (4.05.2010. N3031 shall enter into force after a month






3. Sakpatenti shall not publish inventor’s name if he/she so requests. (4.05.2010.


4. If an invention was created by effort of several persons, each of these persons

shall be regarded as a co-inventor. (4.05.2010. N3031 shall enter into force after a


5. Relations between co-inventors are defined by contract. In case of absence of

contract, each of co-inventors enjoys common equal rights. (4.05.2010. N3031

shall enter into force after a month from its publication, (24.05.2010 N27))

ARTICLE 19. Right to Obtain a Patent (4.05.2010. N3031 shall enter into


1. Inventor or his/her successor has the right to obtain a patent.

2. In case of invention created by several persons, either all co-inventors jointly, or

each of co-inventors with written consent of remaining co-inventors, have the right

to obtain a patent, unless otherwise provided by contract concluded between them.

3. Where one and the same invention was independently created by two or more

persons, an inventor having an earlier application priority has the right to obtain a

patent.

4. If applications under par. 3 of this Article were established to have the same

priority, patent is granted to the person(s) duly noted in the agreement of

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applicants. In case of disagreement between the parties, the dispute is decided by

court.

5. An employer or contractor has the right to acquire a patent for an invention

created by a staff member or hired employee in the course of official or contract

duty, unless otherwise provided by contract.

6. Where creation of an invention is not related to official or contract duty of a staff

member or hired employee, albeit staff member/hired employee makes use of

resources owned by an employer or contractor for the creation of an invention, the

employer/contractor has the right to a patent while staff member/hired employee

has the right to acquire non-exclusive private license on such invention free of

charge or the priority right to acquire exclusive rights deriving from patent, unless

otherwise provided by contract.



ARTICLE 21. Repealed (4.05.2010. N3031 shall enter into force after a




CHAPTER V. FILING AN APPLICATION

ARTICLE 23. Filing an Application (4.05.2010. N3031 shall enter into force


1. Applicant or her/his representative shall file an application with Sakpatenti.


(24.05.2010 N27))

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5. An application is filed with Sakpatenti by submitting application documents in

person or otherwise.

6. A representative may be a patent attorney registered in Sakpatenti. (4.05.2010.


7. Registration rules and qualification requirements are defined by regulation

approved by the Chairman of Sakpatenti. (4.05.2010. N3031 shall enter into force


8. The form of application and instructions on procedures for filing applications are

defined by Instruction on drafting and filing of invention and utility model

applications and on procedures related to granting of a patent (hereinafter-

Instruction). (4.05.2010. N3031 shall enter into force after a month from its


ARTICLE 24 Application (4.05.2010. N3031 shall enter into force after a


1. An application shall include:

a) An application for granting a patent;

b) description of an invention;

c) claims;

d) drawings and other documents, if they are necessary to explain the idea of an

invention;

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e) abstract of an invention, which is only of informative nature.

2. If an application is filed by applicant’s representative, a document certifying

representation authority shall be attached to application at the time of filing or

within two months from the filing date.

3. If an application is filed by applicant’s successor, a document certifying

successor’s status shall be attached to application at the time of filing or within two

months from the filing date.

4. An application shall be filed in an official language of Georgia, and other

application documents - in

any language.

5. In case of filing application documents in foreign language, the applicant shall

provide the Georgian translation within two months from the date of their

submission. Failure to do so will render void the application materials presented in

foreign language.





ARTICLE 27. The Date of Application Filing (4.05.2010. N3031 shall enter


An application shall be considered filed from the moment an application claiming

a patent, description of invention, claims and drawings of the invention (if noted in

the description of the invention) are submitted.

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ARTICLE 28. Unity of the invention (4.05.2010. N3031 shall enter into force


1. An invention must satisfy a requirement of integrity of invention, namely, an

application shall contain a single invention or a group of inventions linked by

single inventive idea. (4.05.2010. N3031 shall enter into force after a month from




ARTICLE 29. Joining and Dividing Applications (4.05.2010. N3031 shall enter


1. An applicant has the right:

a) to divide submitted application into separate parts and file a divisional

application;

b) to join applications and file a joint application.

2. An application divided according to par. 1(a) of this Article retains initial filing

date with Sakpatenti and date of priority.

3. An application joined under par. 1(b) of this Article retains priority for each

constituting application.

4. Divisional or joint application can be filed before Sakpatenti decides on granting

a patent.

ARTICLE 30. Priority (4.05.2010. N3031 shall enter into force after a month


1. An applicant willing to apply for the Convention priority is required to file

application with Sakpatenti within twelve months from the date of filing of earlier

application for this invention in other state party to the Paris Convention or

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member state of the World Trade Organization. (4.05.2010. N3031 shall enter into


2. An applicant willing to utilize exhibition priority is required to file application

with Sakpatenti within six months from the date of exposition of an invention at

official/officially recognized exhibition held in state party to the Paris Convention

or any member state of the World Trade Organization. Convention and exhibition

priorities do not extend each others’ time limits. (4.05.2010. N3031 shall enter into


3. In cases where applicant, for excusable reasons, fails to file application with

Sakpatenti in time limits under par. 1 and 2 of this Article claiming Convention or

exhibition priority, he/she may file an application within the following two months.


(24.05.2010 N27))

4. An applicant willing to apply for the Convention or exhibition priority shall:

a) indicate such willingness at the time of filing application with Sakpatenti or

within 4 months from filing date, but not later than 16 months from the date of

establishment of a claimed priority; (2.07.2010 N 3278)

b) provide Sakpatenti with document certifying the right to claim priority within 3

months from the date of claiming Convention or exhibition priority. (4.05.2010.


5. Priority may be established:

a) repealed (4.05.2010. N3031 shall enter into force after a month from its


b) by earlier application filing date with Sakpatenti by the same applicant

disclosing essence of an invention, provided that the application on the basis of

which such priority is sought was filed within twelve months from the filing date

of earlier application for an invention. The applicant should declare such claim of

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priority at the moment of submitting application to Sakpatenti or within 4 months

from the application, but not later than 16 months from establishment of a claimed

priority. Hereby, an application whose priority was sought is considered

withdrawn; (4.05.2010. N3031 shall enter into force after a month from its


c) on the basis of several applications filed earlier, where each of these conforms to

the conditions set in preceding sub-paragraph. (4.05.2010. N3031 shall enter into


6. The priority shall not be established by the filing date of an application for

which an earlier priority has already been claimed. (4.05.2010. N3031 shall enter




CHAPTER VI. PATENT EXAMINATION AND GRANTING OF PATENT

ARTICLE 32. Examination of Application (4.05.2010. N3031 shall enter into


1. Sakpatenti conducts patent examination, on the basis of which it takes the

decision about granting a patent.

2. Patent examination comprises confirmation of application filing date,

examination of the formal requirements and substantive examination.

3. During examination, Sakpatenti may request the applicant to amend or correct

the application or present explanations that are necessary to continue examination

of application and publication of application materials. The applicant shall comply

with the request within 2 months from the date of notification. Where applicant

fails to comply with the request, Sakpatenti decides on termination of proceedings.

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ARTICLE 33. Confirmation of the Application Filing Date (4.05.2010. N3031


1. Sakpatenti confirms the filing date of an application within two weeks from its

filing.

2. Where application is found to be lacking any of application materials required

by Article 27 of this law, the applicant shall provide such materials within one

month from the date of notification.

3. Where applicant complies with the requirements of par. 2 of this Article, the

date of compliance shall be considered an application filing date. In case of failure

to comply, the application shall not be considered filed.

4. Where description of an invention refers to drawings that are not attached to the

application, the applicant shall present such drawings within the term provided by

par. 2 of this Article. Where drawings are submitted in time, the date of receipt of

such drawings shall be considered an application filing date. In case of failure to

comply with the term, the date of receiving application without drawings shall be

considered an application filing date, while any reference to the drawings shall be

considered omitted.

ARTICLE 34. Examination of Formal Requirements (4.05.2010. N3031 shall


1. Within two weeks from the confirmation of an application filing date, Sakpatenti

conducts examination of formal requirements consisting of a check of integrity of

application and compliance with the form.

2. If an application meets the formal requirements, Sakpatenti decides to conclude

examination of the formal requirements.

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ARTICLE 35. Substantive Examination (4.05.2010. N3031 shall enter into


1. Sakpatenti conducts substantive examination within six months from the

completion of the formal requirements’ examination, in order to determine the

object of protection and the state of the art. (4.05.2010. N3031 shall enter into


11. In order to determine the object of protection as described in the application,

claims, its description and unity, as well as compliance with the requirements of

Articles 16 and 17 of this Law, are subject to substantial examination. (4.05.2010.


12. In order to determine the state of the art, Sakpatenti conducts research and

examination of novelty. Once proven that the application meets the requirements

of examination of novelty, Sakpatenti decides on granting a patent. (4.05.2010.


13. Where expert is fully convinced that an invention is clearly derived from

existing state of the art, Sakpatenti, after hearing considering expert’s proposal,

decides on examination of an inventive step, on the basis of which Sakpatenti

decides on granting a patent. (4.05.2010. N3031 shall enter into force after a month






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ARTICLE 36. Procedure for Deciding on the Substantive Examination of

Application 4.05.2010. N3031 shall enter into force after a month from its


In the course of substantive examination of an application, Sakpatenti provides the

applicant with the following:

a) decision on establishing an object of protection described in the application;

b) results of research on state of the art (research report);

c) decision on the state of the art, taking into view the results of examination of

novelty;

d) decision on granting a patent.







ARTICLE 40. Decision on Granting a Patent and Publication (4.05.2010.


N27))

1. Following decision on granting a patent, Sakpatenti publishes the data of

application and abstract of an invention in the Official Bulletin, and exhibits

materials of application.

2. In case decision on refusal to grant a patent is overturned by a court decision in

force, which grants a patent, Sakpatenti publishes application data and abstract of

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an invention in the Official Bulletin, and exhibits application materials within a

month from the receipt of a court decision.

ARTICLE 401. Amending a Granted Patent (4.05.2010. N3031 shall enter into


1. By request of the patent owner, it is permitted to amend description and claims

that has been granted a patent, for the purpose of rectifying accidental mistakes,

only where such changes are clearly derived from the substance of documents in

question and it is obvious that nothing else could be implied.

2. The rules on amending patent pursuant to par. 1 of this Article are defined by the

instruction.

ARTICLE 402. Disclosure of Information (4.05.2010. N3031 shall enter into

force after a month from its publication, (24.05.2010 N27))Anyone who

willfully discloses information on the substance of application filed with

Sakpatenti before publication of application data in Sakpatenti Bulletin, except for

the applicant or his/her successor, shall be held liable under Georgian law.

ARTICLE 403. Grounds for Appeal to the Chamber of Appeals (4.05.2010.


N27))

1. An applicant has the right to file an appeal to the Chamber of Appeals against

decision of Sakpatenti on completion of the formal requirements examination or

termination of proceedings, as well as decision on substantive examination

refusing to grant a patent.

2. An interested party has the right to file an appeal to the Chamber of Appeals

against decision of the patent examination, claiming non-compliance with the

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requirements of Articles 16 and 17 of this Law or non-compliance of an invention

with the criteria of novelty and inventive step provided by par. 12 and 13 of Article

35 of this Law. At the same time, it is inadmissible to file an appeal to the

Chamber of Appeals against decision of patent examination where appeal is based

on the grounds that are subject to ongoing court proceedings and/or there is a court

decision on the merits of appeal.

3. An interested party has the right to apply to the Chamber of Appeals with the

request to assess criteria of patentability that were not examined by expert in the

course of patent examination, and to request a decision on granting a patent on this

basis. In assessing the criteria of patentability, the Chamber of Appeal should take

into account only those reasons that are presented by the interested party on the

basis of relevant documents.

4. The appeal should be filed to the Chamber of Appeals within three months from

the date of publication/receipt of the decision in question.

5. The Chamber of Appeals hears the appeal and renders decision within three

months from the filing date.

6. Decision by the Chamber of Appeals may be appealed in court within the term

provided by law for appealing administrative-legal acts.

ARTICLE 404. Conflict of Interest (4.05.2010. N3031 shall enter into force


1. The following persons are prohibited from filing an application:

a) an individual currently employed by Sakpatenti or formerly employed by

Sakpatenti in the period of 12 months preceding the date of filing an application;

b) a legal entity whose member, partner, stockholder or chair is a person noted in

sub-paragraph "a”.

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2. In deciding a legal dispute related to granting of a patent, a person who took

immediate part in delivering the appealed decision shall be prohibited from taking

part in the Chamber of Appeals.

3. A person cannot serve as a patent attorney if he/she is currently employed by

Sakpatenti or was formerly employed by Sakpatenti as an expert in the period of

12 months preceding the date of patent attorney registration, or if he/she is a first-

kin relative of Sakpatenti expert.

ARTICLE 41. Granting a Patent (4.05.2010. N3031 shall enter into force after


1. Sakpatenti registers a patent in the Registry of Industrial Property (hereinafter -

the Registry) and issues a patent certificate, if: (4.05.2010. N3031 shall enter into


a) no appeal was filed to the Chamber of Appeals within the term provided by par.

4 of Article 403 of this Law;

b) the Chamber of Appeals decides to grant a patent on the basis of an appeal filed

under Article 403 of this Law,

c) the court decides to grant a patent.

2. Sakpatenti defines the form of patent certificate and data to be entered into the

Registry. (4.05.2010. N3031 shall enter into force after a month from its


3. Any person has the right to access Registry data. (4.05.2010. N3031 shall enter




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ARTICLE 42. Decision Refusing a Grant of Patent (4.05.2010. N3031 shall


1. Sakpatenti decides to refuse granting of a patent where:

a) an application concerns an object that cannot be considered invention under

Article 16 of this Law;

b) an application concerns an invention that is not patentable under Article 17 of

this Law;

c) an invention does not comply with the criteria of novelty;

d) in cases under par. 13 of Article 35 of this Law, an invention does not meet the

criteria of an inventive step;

e) an application does not meet the requirements provided by par. 6 of Article 23

of this Law;

f) description and claim of an invention that form a part of an application are not

sufficient for defining an object of protection pursuant to par. 11 of Article 35 of

this Law.

2. Where refusal to grant a patent relates only to part of an application,

corresponding articles of claims shall be considered withdrawn.

ARTICLE 421. Re-Examination of an Invention (4.05.2010. N3031 shall enter


1. An interested party has the right to request re-examination of an invention

within the term of patent validity, on the grounds that an invention does not meet

the patentability criteria.

2. An application for re-examination should be supported by the following

documents:

a) written argument pertaining to non-compliance of an invention with the

patentability criteria;

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b) copies of all issued and published patents that form the basis for party’s

argument. In addition, where documents required by this sub-paragraph are

presented in foreign language, the interested party shall provide their Georgian

translation within 1 month. Failure to comply will cause the documents to be

considered non-filed.

3. Within two weeks from the date of filing an application for re-examination of

invention, patent owner has the right to make written objections that will be taken

into account during re-examination.

4. On the basis of re-examination, Sakpatenti decides to decline the request for

revocation of the patent or to revoke the patent wholly or partially.

5. The data on full or partial revocation of the patent are published in the Bulletin

and recorded into the Registry.

6. Procedures for re-examination of an invention shall be determined by the

instruction.





ARTICLE 45. Recalling an Application (4.05.2010. N3031 shall enter into


The applicant has the right to recall his/her application before publication.

ARTICLE 46. Extension and Restoration of Procedural Terms (4.05.2010.


N27))

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1. In the course of application proceedings, in accordance with applicable rules, the

applicant has theright to require:

a) suspension of the application review;

b) amendments to the presented application materials, provided that such

amendments are not beyond the substance of an invention;

c) extension of time-limit for response to requirements raised by Sakpatenti;

d) reinstatement of application-related rights that were revoked due to failure to

meet time-limits.

2. Procedures for actions under par. 1 of this Article are determined by the

instruction.

ARTICLE 47. Service Fee (4.05.2010. N3031 shall enter into force after a


1. Examination of formal requirements of application, patent examination,

publication and registration, yearly continuance of patent protection, appeal,

amendments to Registry data and other

activities shall be subject to a fee.

2. Failure to comply with time limits for payment of fees provided in par. 1 of this

Article results in termination of application proceedings.

3. Type and amount of fees shall be determined by the decree of the Government

of Georgia.

4. Form and rules for payment of fees are determined by the instruction.

27

CHAPTER VII. SCOPE OF EXCLUSIVE RIGHTS DERIVING FROM

PATENT(4.05.2010. N3031 shall enter into force after a month from its


ARTICLE 48. Scope of Exclusive Rights (4.05.2010. N3031 shall enter into


1. The patent owner uses invention at his/her discretion. The patent owner has the

right to sell or dispose of the patent otherwise, issue private license on the use of

patent in accordance with applicable rules or/and to lease the patent.

2. The patent vests its holder with the exclusive rights to prohibit others, without

holder’s permission, from:

a) production, sale, offer for sale, use, import or other market use of a product

protected by patent;

b) use or offer for sale of a patented method;

c) sale, offer for sale, use, import or other market use of a product directly made by

the use of a patented method.

3. Where exclusive right of the patent holder extends to the patent protecting the

method for producing a new product, any other similar product made by another

person will be deemed produced by the use of this method, until proven otherwise.

4. Where patent is held by several persons:

a) transfer of patent right, issuing private license for use of patent or patent lease

requires consent of all owners;

b) each patent owner has a right to use a patented object at his/her own production

without consent of the other patent owners.

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ARTICLE 51. Conditional Rights (4.05.2010. N3031 shall enter into force


The applicant holds conditional entitlement to all rights accorded by the patent,

from the day of publishing an application until he/she is granted a patent. In case a

patent is not granted, these rights will not be considered established.

ARTICLE 52. Limitation of Exclusive Rights (4.05.2010. N3031 shall enter

into force after a month from its publication, (24.05.2010 N27))The following

shall not be considered a violation of exclusive rights:

a) further dissemination or other use of the product produced by the patent owner

or under his/her permission and put on the market;

b) private use of invention for personal ends, unless such action is not intended for

commercial purposes;

c) use of invention abroad the foreign vessel, aircraft or land transport present on

the territory of Georgia. In such cases, invention should be used exclusively abroad

such transportation means and not for entrepreneurial purposes;

d) use of invention in cases of natural disaster, catastrophe, epidemic or other

emergency situations.

29

ARTICLE 53. Right of Prior Use (4.05.2010. N3031 shall enter into force after


1. Right of prior use is a right of a person to use the patent regardless of its effect,

where such person has been using invention in good faith or conducted preparatory

works for its use prior to the date of filing patent application in Sakpatenti or the

priority establishment date. (2.07.2010 N 3278)

2. The right of prior use entitles third persons to use invention exclusively for

purposes and in volume corresponding to its purposes and volume of its past use or

preparatory works, up to the date of filing or establishment of priority. (2.07.2010

N 3278)

3. The right of prior use shall not be licensed privately.

4. It is permitted to transfer the right of prior use only together with an enterprise

where actions referred to in par. 2 of this Article were undertaken.

ARTICLE 54. Revocation of the Patent (4.05.2010. N3031 shall enter into


1. A patent may be revoked by Sakpatenti:

a) on the application of the patent owner;

b) in cases of non-payment of the yearly fee for extension of patent protection;

c) based on results of re-examination of an invention.

2. A patent revoked pursuant to sub-par. 1(b) of this Article may be reinstated if

the patent owner pays the next-year fee for patent validity within 6 months from

expiry of the term for payment of the annual patent validity fee. Following six

months from the expiry of the afore-noted term, revoked patent may be reinstated

if the patent holder pays patent restoration and validity fees.

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3. In cases where next-year fee for patent validity is not paid before expiry of the

term noted in par. 2 of this Article, the patent is considered revoked from the date

of expiry of the term.

4. Information on patent revocation and reinstatement is recorded in the Registry.

5. The patent is considered reinstated from the date of publishing corresponding

information.

ARTICLE 55. Right of Further Use (4.05.2010. N3031 shall enter into force


Any person, who has utilized an invention protected by patent in good faith or

conducted preparations for exploitation of such invention from the date of patent

revocation on the territory of Georgia until its reinstatement has the right to

continue its use for entrepreneurial purposes. Transfer of this right is permitted

only together with the enterprise (right of further use).



ARTICLE 57. Invalidation of a Patent (4.05.2010. N3031 shall enter into force


1. A court shall declare a patent invalid where it has established that:

a) an object of patent is not patentable;

b) a patent does not describe an invention to the degree that makes its realization

possible;

c) object of patent falls in the category of objects that cannot be patented under

Article 16 of this Law;

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d) object of patent falls in the category of objects that cannot be considered an

invention under Article 17 of this Law;

e) object of patent falls beyond the scope of application in respect of which the

priority was established, or the patent is granted on the basis of a divisional

application and its object is beyond the scope of the first application;

f) if the patent owner had no right to hold patent in accordance with Article 19 of

this Law.

2. In cases envisaged by sub-par. 1(f) of this Article, an interested party may

request an entitlement to a patent instead of requesting its invalidation.

3. Information on invalidation of patents is recorded in the Registry.

ARTICLE 58. Results of Patent Invalidation (4.05.2010. N3031 shall enter


As a result of patent invalidation, rights granted by the patent are considered not

established.

CHAPTER VIII. TRANSFER OF PATENT RIGHTS AND PRIVATE

LICENSE ON THE USE OF PATENT (4.05.2010. N3031 shall enter into


ARTICLE 59. Private License on Patent Use (4.05.2010. N3031 shall enter


1. Patent owner has the right to grant private license for the use of a patent.

2. Private license is not a license envisaged by the Law of Georgia on Licenses and

Permits.

3. Private license agreement should be concluded in writing. Private license should

define the scope of use for the object protected by patent.

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4. Private license may be exclusive or non-exclusive. If an agreement on private

license does not define a type of license, the license shall be deemed non-

exclusive.

5. Granting non-exclusive private license does not deprive the license granter of

the right to issue other license on equivalent terms.

6. Granting exclusive private license deprives the license granter of a right to issue

other license on equivalent terms.

7. Private license holder has a right to file an appeal in court claiming infringement

of the rights deriving from patent, unless the patent owner files an appeal on

his/her own accord within reasonable time from being notified such infringement.

8. Private license agreement and amendments thereto may be recorded in the

Registry.

ARTICLE 60. OPEN LICENSING (4.05.2010. N3031 shall enter into force


1. Patent owner has the right to announce open license status where patent has not

been a subject of an exclusive license.

2. An open license can be only non-exclusive.

3. An open license status confers any person the right to use patent pursuant to the

conditions established by open license.

4. In the case of announcing an open license, the amount of patent fee is halved.

5. Sakpatenti shall be informed about the open license, so that it enters

corresponding records in the Registry and publishes data in the Bulletin.

6. Patent owner can request Sakpatenti to terminate open license status at any time.

Cancellation of open license status approach does not have an effect on open

licenses issued.

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ARTICLE 601. Transfer of Patent Rights (4.05.2010. N3031 shall enter into


1. Agreement on transfer of exclusive rights shall be concluded in writing.

2. In line with applicable rules, agreement on transfer of exclusive rights and

amendments thereto shall be recorded in the Registry and data published in the

Bulletin.

3. New owner of the patent shall not use the rights accorded by patent against third

parties until relevant changes are entered into the Registry.





CHAPTER VIII . PATENT LEASE1 (4.05.2010. N3031 shall enter into force


ARTICLE 621. Patent Lease (4.05.2010. N3031 shall enter into force after a


1. Unless provided otherwise by this Law, provisions of Chapter 6, Title 3, Book 2

of the Civil Code of Georgia shall govern agreements on patent lease.

34

ARTICLE 622. Form and Procedure for Patent Lease Agreement (4.05.2010.


N27))

1. Patent lease agreement shall be concluded in writing. Failure to comply with

written form of agreement shall render lease agreement void.

2. A patent cannot be leased simultaneously in favor of multiple persons.

3. Patent lease agreement shall be registered at Sakpatenti and data are published in

the Bulletin.

ARTICLE 623. Private License on Leased Patent. (4.05.2010. N3031 shall


1. Licenses issued by the patent owner prior to the conclusion of the patent lease

agreement,

pursuant to rules defined by Law, shall remain in effect.

2. Lease holder’s prior written consent is required for granting license on a leased

patent.

ARTICLE 624. Alienation of a Leased Patent (4.05.2010. N3031 shall enter


1. Lease holder has the right to alienate the leased patent only after notifying the

patent owner in

accordance with the rules established by part 1 of Article 282 of the Civil Code of

Georgia.

2. Alienation of the leased patent is conducted through auction.

3. Auctions are held in accordance with applicable rules of Articles 301-309 of the

Civil Code of

Georgia.

35

4. Owner of exclusive license on leased patent has a priority right to purchase the

leased patent prior

to the auction.

5. In the course of alienation of a patent by the lease holder, licenses granted by the

patent owner

prior to conclusion of the lease agreement, pursuant to rules set by law, shall

remain in effect.

Article 625 . Open License Status of a Leased Patent (4.05.2010. N3031 shall


1. Upon application by the lease holder, the court may order open license status of

the leased patent instead of its compulsory alienation by way of auction.

2. Open licensing status of the leased patent is terminated whenever the creditor is

satisfied or it is obvious that the creditor will not be fulfilled by such status.

3. Licenses granted in the course of open license status of a leased patent shall

remain in effect after cancellation of an open status.

CHAPTER IX. Repealed (4.05.2010. N3031 shall enter into force after a


CHAPTER X Repealed (4.05.2010. N3031 shall enter into force after a month


CHAPTER XI. Patent Dispute (4.05.2010. N3031 shall enter into force after a




36

ARTICLE 681. Appeal to the Court (4.05.2010. N3031 shall enter into force


1. Infringement of rights derived from patent shall mean infringement of rights

accorded by this Law

leading to responsibility under the law of Georgia.

2. Sakpatenti shall not take part in patent dispute concerning infringement of rights

derived from

patent.

3. Infringement of exclusive rights may lead to criminal and civil responsibility.

ARTICLE 682. Statute of Limitation (4.05.2010. N3031 shall enter into force


Unless provided otherwise by this Chapter, a claim concerning infringement of

rights deriving from patent can be filed within 3 years from the moment when

infringement of rights has become known to the patent owner.

ARTICLE 683. Intermediate Measures for Securing the Claim (4.05.2010.


N27))

1. Before the start of a hearing on merits, the court may issue a ruling prohibiting

defendant or a person against whom there is a reasonable doubt of having infringed

exclusive rights from actions provided by Article 48 of this Law.

2. Before the start of the hearing on merits, the court may issue a ruling on arrest of

those goods that are subject of a reasonable doubt of being produced in violation of

exclusive rights, as well as tools, equipment and other supporting means necessary

for the production of such product.

37

ARTICLE 684. Responsibility for Infringement of Rights Deriving From

Patent (4.05.2010. N3031 shall enter into force after a month from its


1. A person who sustains damages from infringement of rights derived from patent

has the right to request destruction of products, as well as tools, equipment and

other supporting means necessary for the production of such product, owned or

used by infringer, in case there are no alternatives to remedy the infringement and

illegally produced product cannot be held over to the infringer or exclusive rights’

holder.

2. Request provided by par. 1 of this Article can be made in cases where product is

made through direct use of means that are presented as a method protected by

patent.

3. Product produced in violation of exclusive rights deriving from patent, which

was obtained by a third party in good will, cannot be confiscated unless the patent

was obtained for receiving profit from its introduction to the market.







38

CHAPTER XI1. UTILITY MODEL (4.05.2010. N3031 shall enter into force


ARTICLE 711. Criteria of Patentability of a Utility Model (4.05.2010. N3031


1. A utility model, characterized by lesser inventive step compared to invention

and a diminutive invention in essence, is patentable where it satisfies the criteria of

patentability - novelty, inventive step and industrial applicability.

2. A utility model accords to requirement of novelty where it is not known from

the existing state of the art.

3. A utility model accords to inventive step where it is not known from existing

state of the art to the person skilled in the art at the date of application or

establishing priority. (2.07.2010 N 3278)

4. Industrial application of the utility model implies capability of its production or

use in industry.

5. The patent validity term for utility model is 10 years from the day of application

to Sakpatenti.

6. Unless otherwise is provided in this Chapter, utility model is subject to the

provisions of this Law on the creation, examination, use and legal protection of

inventions.

7. In the course of substantive examination of a utility model application,

Sakpatenti supplies the applicant only with decisions provided by sub-paragraphs

1(a) and 1(d) of Article 36 of this Law.

8. In determining novelty of a utility model, Sakpatenti conducts research only

with regard to application filed with Sakpatenti.

9. Procedures for examining application on utility model are defined by the

instruction.

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ARTICLE 712. Relationship between Inventions and Utility Models


(24.05.2010 N27))

1. An applicant can file application for one and the same invention in Sakpatenti

claiming simultaneously an invention and a utility model.

2. An application filed in accordance with par. 1 of this Article is examined in

separate items and decision is taken independently on each item.

3. In cases under this Article, granting a patent on invention causes revocation of

the patent on utility model. Where patent is not granted on the grounds of an

invention failing to meet requirement of novelty, the utility model shall be

considered void.

4. Before decision on granting a patent, it is permissible to amend an application

for invention into utility model application and vise versa.

CHAPTER XII. INTERNATIONAL APPLICATION

ARTICLE 72. International Application (4.05.2010. N3031 shall enter into


1. The rules of this Chapter shall apply to international applications filed with

Sakpatenti in accordance with the Patent Cooperation Treaty (PCT).

2. Sakpatenti processes international applications in line with the Patent

Cooperation Treaty, this Law and other normative acts.

40

ARTICLE 73. Status of an International Application (4.05.2010. N3031 shall


1. An international application indicating Georgia as a place for obtaining national

patent for an invention or utility model is equal to the application filed with

Sakpatenti, and international application

shall be treated as a national application from the date of its filing.

2. An applicant is entitled to rights provided by Article 51 of this Law where an

international application has been published by Sakpatenti in Georgian language in

accordance with Article 40 of this Law.

ARTICLE 74. Procedure for Filing an International Application (4.05.2010.


N27))

1. Sakpatenti acts as a "receiving office” for international applications for citizens

or permanent residents of Georgia.

2. Sakpatenti, in its capacity of a "receiving office” of international applications,

accepts international applications filed in Georgian, English or Russian languages.

Whereas, the postage fee for sending application to competent international

organizations or agencies shall be paid to Sakpatenti within a month from filing

date of international application.

3. In case of filing international application in Georgian language, the applicant

shall provide translation of the application in English or Russian within 1 month

from the date of filing.

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ARTICLE 75. Accepting an International Application (4.05.2010. N3031 shall


1. Sakpatenti acts as a "designated office” with regard to international applications

indicating Georgia as a place for obtaining national patent for an invention or

utility model.

2. Sakpatenti acts as an "elected office” with regard to international applications

indicating Georgia as a place for obtaining national patent for an invention or

utility model, where the inventor has selected Georgia under the provisions of

Chapter II of the PCT.

CHAPTER XIII. TRANSITIONAL PROVISIONS

ARTICLE 76. Application of the Provisions of this Law to Formerly

Established Relations (4.05.2010. N3031 shall enter into force after a month


1. Applications undergoing patent examination at the moment of entry into force of

this Law shall continue to be subject to proceedings, including granting of a patent,

in accordance with the Decree of the Cabinet of Ministers of Georgia No 302 of

March 16, 1992 "On Approving and Enacting of the Statute on Inventions” and

Decree No. 303 of March 15, 1992 "On Approving and Enacting of the Statute on

Industrial Designs”.

2. Applications filed in Sakpatenti on the basis of author’s certificate of invention

issued by the former USSR may be granted a patent of Georgia unless a 20-year

statute of limitation between filing an application on invention in USSR office and

an application in Sakpatenti has lapsed.

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CHAPTER XIV. FINAL PROVISIONS

ARTICLE 77. Measures Related to Enactment of this Law (4.05.2010. N3031


1. This law shall enter into force in three months from publication.

2. Along with enactment of this Law, taking into account transitional provisions,

Decrees of the Cabinet of Ministers of Georgia No 302 of March 16, 1992 and No

303 of March 15, 1992, respectively, "On Approving and Enacting of the Statute

on Inventions” and "On Approving and Enacting of the Statute on Industrial

Designs”, shall be considered annulled.

21. Order of the President of Georgia No 233 of May 8, 2002 ”On Patent Attorneys

of Georgia” shall be considered annulled. (4.05.2010. N3031 shall enter into force




4. The President of Georgia shall ensure compliance of an Order No. 451 of 16

October 2000 ”On Approving the Regulation on "Protection and Use of Secret

Invention and Utility Model” with this Law. (4.05.2010. N3031 shall enter into


5. Sakpatenti shall elaborate and submit to the Government of Georgia for

approval: (4.05.2010. N3031 shall enter into force after a month from its


a) repealed – (26.10.2010.N3741)

b) fees for the service related with patenting, registration and deposition of

intellectual property subject-matters.

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6. Sakpatenti (26.10.2010.N3741) shall enact the statute on patent attorneys of

Georgia. (4.05.2010. N3031 shall enter into force after a month from its


7. The Chairman of Sakpatenti shall enact the instruction “On Procedures Related

with Drafting and Filing Applications for Inventions and Utility Models and

Granting of Patents” (26.10.2010.N3741)

ARTICLE 78. Status of Patents Granted before Enactment of this Law


(24.05.2010 N27))

The patents granted before enactment of this Law are equal to patents granted

under this Law.

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